Key takeaways
For revocation actions, the registered proprietor is the correct defendant (R. 8.6, R. 42.1 RoP), prioritizing legal certainty over actual entitlement.
- The law ensures a party seeking revocation does not bear the burden of investigating true entitlement but can rely on the national patent register.
- Entitlement disputes generally do not shift this, preserving legal certainty for the claimant. Substitution is available (RoP 42.2, 61.2).
Direct infringement (Art. 25 UPCA) requires the accused product to embody all claimed components; partial implementation may at best constitute indirect infringement (Art. 26 UPCA).
The infringement action failed because the accused products (phones/tablets) did not contain the claimed controller, which was located on separate accessory devices not targeted by the direct infringement claim.
The UPC’s front-loaded system (R. 36, R. 263 RoP) bars late amendments, such as adding an indirect infringement claim, without proper justification.
A claimant cannot introduce a new cause of action with different legal requirements (e.g., subjective knowledge for indirect infringement) late in the proceedings after the defendant has already responded, consistent with active case management obligations.
Validity maintained; novelty and inventive‑step attacks unsuccessful (revocation dismissed) (Art. 65 UPCA; RoP 29–30).
Added matter, novelty and obviousness attacks failed; the asserted prior art did not disclose the update relationship (LPD1′ based on LPD1, LPD2, PAOS) or the PAOS‑based timing adjustment.
The unsuccessful party bears costs (Art. 69(1) UPCA), but a partial cost burden may be imposed on the successful party for confusing or inconsistent procedural conduct.
The claimant, though successful in defending the revocation counterclaim, had to bear 20% of the costs due to its confusing initial submissions regarding its proprietorship of the patent.
Division
LD Düsseldorf
UPC number
UPC_CFI_100/2024; UPC_CFI_411/2024
Type of proceedings
Infringement action, counterclaim for revocation
Parties
Claimant / Counterdefendant 1: Ona Patents SL
Counterdefendant 2: Ekahau Oy
Defendants / Counterclaimants: Google Ireland Limited and Google Commerce Limited
Patent(s)
EP 2 263 098 B1
Jurisdictions
UPC
Body of legislation / Rules
Art. 25 UPCA
Art. 26 UPCA
Art. 31 UPCA
Art. 32 UPCA
Art. 33 UPCA
Art. 69 UPCA
R. 8.6 RoP
R. 25.1 RoP
R. 36 RoP
R. 42.1 RoP
R. 152.2 RoP
R. 263 RoP
